Business Methods

McHale | Slavin's familiarity with internet businesses and software patents has enabled us to advise clients as to the best methods of protecting their innovative business methods. The firm employs former patent examiners with U.S. Patent and Trademark Office experience in the business method area. We advise our clients on how to obtain the broadest possible protection for their novel business methods under the current rules and policies of the U.S. Patent Office governing examination and issuance of business method patents. We also keep abreast of the policy changes and federal court decisions in this area to ensure that our client's novel ideas receive the broadest and best possible protection. Patents on methods of doing business were allowed in the aftermath of State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998). That ruling opened the door to patents for novel methods of doing business for services that were otherwise denied patent protection - such as arbitration, tax-planning, legal counseling, charity fundraising, and even novel-writing. In the case of In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit (CAFC) ruled that the Bilski patent (method of hedging risks in commodity trading) did not fall within the subject matter of patentable material and reached this decision based on the so called machine or transformation test. The case was eventually addressed by the United States Supreme Court. Although the Supreme Court affirmed the CAFC’s decision, it reached its decision based on different grounds, holding that the Bilski patent was an abstract idea and therefore not patentable subject matter. More importantly, it refused to categorically exclude business patents from potentially obtaining patent protection under U.S. Patent Laws. As it has done in previous patent cases, the Supreme Court rejected the Court of Appeal’s use of a bright line test. As discussed in the Supreme Court’s opinion, the machine or transformation test maybe a useful tool, however, it should not be the sole test for determining patent eligibility. Accordingly, inventors should apply for business method protection as long as such inventions are not merely abstract ideas and are in compliance with other aspects of patent law (new, non-obviousness and useful).

Our experience and advice enables our client to make sound business decisions regarding the manner in which business method patents fit into their intellectual property portfolio and business plan. Contact us for additional information or to schedule a consultation.